Handling Licensing Disputes

Owners enjoy the right to say whether others may use their intellectual property, as well as how, where and when it may be used. Typically such grant of permission is called a license, including a copyright license, trademark license or a license to use someone's right of publicity. When a licensee makes use of intellectual property rights in a way not permitted by the license, or the use goes outside the boundaries of the license, there can be litigation involving both breach of the license agreement and infringement of intellectual property rights.

I am attorney Lawrence G. Townsend. For more than 35 years, I have been zealously protecting the intellectual property rights of my clients. If you believe there has been a breach of a license involving your IP rights, or you have been accused as a licensee, call 415-906-2792.

What Type Of Dispute Are You Involved In?

Copyright: Nonpayment for creative services is most common. A photographer takes and delivers photographs, software is developed or graphic designs are created, and the contracting party refuses to pay as agreed. There is no question but that the creator has a right to sue for breach of contract, but typically he or she will be limited to the fees agreed upon. However, if it's made clear in the agreement that there is no right to use the material unless and until payment is made, there may be a case of copyright infringement that greatly increases the financial liability of the contracting party. A careful reading of the contract and understanding of the law will determine which way it plays out.

Trademark: Trademark license litigation often involves disputes concerning the quality of goods and services offered by the licensee to the public, or issues involving compliance with other terms of the license required by the licensor, e.g., how and where the licensed goods and services are advertised and promoted by the licensee. Since a trademark is but a symbol of the goodwill associated with a particular source of goods and services (an association in consumers' minds with an expected quality, consistency and brand "personality"), any variance with the licensor's requirements and ability to control those carefully cultivated consumer expectations can result in both a claim of breach of the license agreement and trademark infringement.

If you can prove that the license dispute is an infringement, you can take your case to federal court. There, you will be able to seek statutory damages and attorney's fees. If you cannot prove infringement of your trade secret, trademark or copyright, then you will be left to the limited damages available to you in breach of contract claims.

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